October 14, 2011

Judge Leonard P. Stark: Motion to Amend GRANTED/Motion to Strike Inequitable Conduct Claims GRANTED

Plaintiff, Softview, sought to add claims against additional defendants concerning the same patents-in-suit within the time set forth in the case scheduling order. For this reason, and because the request satisfied the test for permissive joinder and will "promote judicial economy," the Court granted Softview's motion to amend. Softview LLC v. Apple Inc., et al., C.A. No. 10-389-LPS, Memo. Order (D. Del. Sept. 30, 2011). Any concerns about jury confusion, the Court noted, could be addressed by a request for a separate trial later in the case. Id. at 1-2.

In addition, Softview moved to dismiss and strike defendants' inequitable conduct defenses. The Court granted the motion finding that the defendants' original and proposed amended pleadings "fail to adequately allege scienter." Id. at 2. A theory based on a "mere disagreement with Softview's prosecution counsel as to whether certain amendments impermissibly added 'new matter'" along with other related concerns does not "give rise to a reasonable inference that prosecution counsel knew he was amending to add new matter and intended to deceive the PTO of this fact" Id. (emphasis in original).

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October 12, 2011

Judge Sue L. Robinson: Jury Verdict - Patent INVALID

On September 28, 2011, a jury returned a verdict in the Solvay, S.A. v. Honeywell Specialty Materials LLC matter, in favor of the defendants, finding the patent-in-suit invalid. C.A. No. 06-557-SLR, Jury Verdict Form (D. Del. Sept. 28, 2011).

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October 11, 2011

Judge Stark: Motion to Dismiss or for a More Definite Statement Denied

In St. Clair Intellectual Property Consultants, Inc. v. Apple Inc., C.A. No. 10-00982-LPS (D. Del. Sept. 30, 2011), Judge Stark denied "Defendant Research in Motion Ltd. and Research in Motion Corporation's Motion to Dismiss or, in the alternative, Motion for a More Definite Statement." Id. at 1. In its motion to dismiss, Research in Motion ("RIM") argued that the plaintiff's complaint "fails to satisfy the third required element of Form 18 because it fails to identify the specific RIM products (or class of products) that allegedly infringe any of the patents-in-suit." Id. at 4-5. Although the complaint "identifies the category of infringing products as 'smartphones and tablets' and elaborates by identifying specific models of RIM's smartphones and tablets that are allegedly infringing[,]" RIM claimed that the complaint was deficient because it "identifies 'nearly every product sold by RIM' and, thus, provides insufficient notice[.]" Id. at 5. Judge Stark rejected this argument, noting that the complaint "makes numerous references to the allegedly infringing product models and explicitly ties the RIM products to each recitation of infringement[.]" Id. at 6. In denying RIM's motion to dismiss, the court also rejected RIM's argument that the complaint "fails to allege that RIM makes, uses, or sells a device 'embodying the patent[,]'" stating that "the Complaint is not required to address how the infringing products use the patented technology." Id. at 6-7. Finally, the court "determined that St. Clair's Complaint provides sufficient notice of the infringement allegations[,]" and therefore the court denied RIM's motion in the alternative for a more definite statement. Id. at 7-8.

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September 29, 2011

Judge Sleet: Motion to dismiss based on claim preclusion GRANTED

In LG Electronics U.S.A., Inc. v. Whirlpool Corporation, C.A. No. 10-311-GMS (D. Del. Sept. 29, 2011), LG filed a motion to dismiss Whirpool’s counterclaim of infringement of Whirlpool’s ‘130 patent by LG’s French door refrigerators. Id. at 2. A jury had previsouly found that LG’s French door refrigerators did not literally infringe Whirpool’s patent. LG argued that because its redesigned refrigerators share the same configuration as the refrigerator at issue in the previous action in all material aspects, Whirpool’s counterclaim was barred by res judicata. Id. at 6. Whirlpool argued that LG’s motion should be treated as a motion for summary judgment because it required “consideration of matters outside the pleadings[;]” and that LG did not “meet its burden of showing that the French door refrigerators subject to Whirlpool’s counterclaim [were] essentially the same as those addressed in the [previous] action.” Id. at 7. While granting LG’s motion to dismiss, Judge Sleet rejected Whirlpool’s argument that LG’s motion must be treated as a motion for summary judgment. “Although the court may not generally consider evidence beyond the complaint in deciding a Rule 12(b)(6) motion, when a motion to dismiss is based upon the defense of claim preclusion, the court may take judicial notice of the record in the [previous] action in reaching its determination on LG’s motions to dismiss.” Id.

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September 29, 2011

Magistrate Judge Burke: Motion for Leave to Take Expedited Discovery Granted-in-Part

In Kone Corp. v. Thyssenkrupp USA, Inc., C.A. No. 11-465-LPS-CJB (D. Del. Sept. 26, 2011), Magistrate Judge Burke granted-in-part the plaintiff's motion for expedited discovery in connection with the plaintiff's motion for a preliminary injunction. Judge Burke stated that the appropriate test for evaluating a request for expedited discovery in the context of a preliminary injunction is the "good cause"/"reasonableness" standard, requiring "the party seeking discovery to show 'good cause' for its motion, such that the request is 'reasonable' in light of the relevant circumstances." Id. at 7, 12.

Applying this standard to the facts of the case, the court found that "[t]he circumstances of this case, including its procedural posture, weigh in favor of granting expedited discovery" with respect to the pending preliminary injunction motion. Id. at 12. First, the preliminary injunction motion had already been pending for approximately three months, and the defendants had already filed answers more than six weeks earlier. Id. Thus, "absent the pending preliminary injunction motion, the Court would already have scheduled a Rule 16 teleconference and the parties would otherwise have commenced the discovery process." Id. Second, "because much of the information at issue would likely have been turned over anyway by Defendants soon after a Rule 16 conference[,]" expedited discovery was likely to streamline the case. Id. at 13. Third, "expedited discovery is more likely to be an efficient use of the parties' resources when it relates to a pending preliminary injunction hearing, where it can help to ensure a clear and focused factual record." Id.

Although the plaintiff was able to show "a need for discovery relating to certain, circumscribed subject-matter that may illuminate issues at play at the preliminary injunction hearing[,]" Judge Burke found that the plaintiff's discovery requests were "not narrowly tailored." Id. at 14. Thus, the court granted the motion for expedited discovery, but only with respect to "the key disputed factual issue relevant to the P.I. motion hearing[.]" Id. at 15.

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September 20, 2011

Chief Judge Sleet Grants Motion to Amend, Doubling Patents In Case

Last week, Chief Judge Sleet issued a memorandum opinion in LG Electronics U.S.A., Inc. v. Whirlpool Corp., C.A. No. 10-311-GMS (D. Del. Sept. 12, 2011), granting a motion for leave to amend a patent complaint by LG. LG initially brought the ligitation as a declaratory judgment action on one patent (relating to refrigeration technology); Whirlpool counterclaimed on three additional patents. With its proposed amendment, LG sought to add infringement claims for three of its own patents, plus declaratory judgment actions for the additional patents counterclaimed by Whirlpool. Whirlpool opposed the amendment, alleging that the new infringement claims would "unnecessarily complicate the litigation, thereby prejudicing Whirlpool."

The Court granted leave to amend (with little comment), stating that the technology is related, and that a denial of leave to amend "would result in the filing of another lawsuit and would not promote the interests of judicial efficiency." Id. at 3-4.

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September 16, 2011

Judge Robinson: Marginal Relevance of Evidence Outweighed by Risks of Unfair Prejudice, Confusing and Misleading the Jury, and Wasting the Parties' Time

Judge Robinson recently resolved several pretrial issues in Solvay, S.A. v. Honeywell Specialty Materials LLC, C.A. No. 06-557-SLR (D. Del. Sept. 13, 2011), including:

(1) granting the parties' motions in limine to exclude "certain characterizations of Honeywell's [prior art] patent made in satellite patent prosecutions" because "the marginal relevance of the evidence is far outweighed by the danger of unfair prejudice, confusion of the issues, misleading the jury and wasting the limited time of the parties explaining the satellite patent prosecutions" (id. at 1-2);

(2) declining to reopen the issue of the priority date of the asserted patent (id. at 2);

(3) stating that a dependent claim should not be submitted to the jury when it was not discussed in the plaintiff's expert report (id. at 2);

(4) granting "Honeywell's motion for leave to serve an expert witness statement on the disclosure of . . . one of the late disclosed documents that has become a critical issue in the case since the Federal Circuit's decision" (id. at 2-3);

(5) denying Honeywell's motions for reargument "regarding the issue of abandonment, suppression or concealment" (id. at 3-4);

(6) holding that Honeywell failed "to establish a cause of action for inequitable conduct" because Honeywell did not "establish the requisite level of intent" required under the Federal Circuit's recent holding in Therasense (id. at 4-5); and

(7) stating that the issue of equitable estoppel would be tried at a bench trial following the jury trial (id. at 5).

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September 16, 2011

Judge Robinson: Granting-in-part and denying-in-part cross motions for summary judgment Judge Robinson considered whether a district court could correct typographical errors in patent claims

Judge Robinson recently decided Intermec’s motion for summary judgment of noninfringement and invalidity of Palm’s patents and Palm’s cross motion of no invalidity and infringement. Id. at 3. An issue in dispute was whether the district court could correct typographical errors in the asserted claims of Palm’s patents. Id. at 12. Judge Robinson construed the claims to include corrections to the typos, finding that the “errors [were] obvious on the face of the patent, [and] that there [could] be no reasonable debate regarding their correction as discussed above[.]” Id. at 14-15. Judge Robinson went on to grant-in-part each motion for summary judgment, finding that Palm’s ‘803 patent and ‘049 patent were valid and that Intermec did not infringe claims 17, 18, and 22 of the ‘803 patent or claim 17 of the ‘049 patent.

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September 12, 2011

Judge Davis: Claim construction opinion

In an ANDA patent infringement action involving generic versions of Travatan® and Travatan Z®, Judge Davis recently issued a claim construction decision construing disputed claim terms of U.S. Patent Nos. 5,631,281; 6,011,062; 6,503,497; and 6,849,253. Alcon Research Ltd. v. Barr Laboratories Inc., C.A. No. 09-318-LDD (D. Del. Sept. 6, 2011). The following terms were construed:

“borate-polyol complex”
“ophthalmically acceptable antimicrobial agent”
“to enhance the antimicrobial activity”
“aqueous ophthalmic composition”
“enhance / enhancing the chemical stability”
“therapeutically-effective amount of prostaglandin”
“aqueous composition”

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September 12, 2011


On September 21, 2011, the United States District Court for the District of Delaware and the Delaware Chapter of the Federal Bar Association will present a Continuing Legal Education program on “Trial and Appellate Mediation.” The program will include a trial mediation panel, and appellate mediation panel and a practicum session.

The morning session will feature both panel presentations. The trial mediation panel will include a discussion with U.S. Magistrate Judge Mary Pat Thynge of the United States District Court for the District of Delaware, Vice Chancellor Donald F. Parsons, Jr. of the Delaware Court of Chancery, Andre G. Bouchard of Bouchard Margules & Friedlander, P.A., and David B. Stratton of Pepper Hamilton LLP. The appellate mediation panel will address the appellate mediator’s perspective as well as appellate mediation from the attorney’s point of view. The speakers for the appellate mediation panel include James M. Amend, Chief Circuit Mediator for the U.S. Court of Appeals for the Federal Circuit; Penny Conly Ellison, Circuit Mediator for the U.S. Court of Appeals for the Third Circuit; Frank E. Scherkenbach of Fish & Richardson; and Nancy Winkelman of Schnader Harrison Segal & Lewis LLP.

The afternoon session, featuring a practicum focused on mediation skills, will begin immediately after lunch. As part of this practicum session, Magistrate Judge Thynge will conduct a mock mediation based on a wrongful death case previously mediated by the Court. The practicum is designed to give mid-level associates and other practitioners an opportunity to learn the ins and outs of trial mediation from experienced practitioners, and to ask questions about mediation strategy.

The program has been approved for 6.0 Delaware CLE credits. As always, the program will be free to all members of the Delaware Chapter of the Federal Bar Association. Lunch will be provided at a cost of $15 per person. Space is limited for this program so please email Rocky Kravetz at Robert.kravetz@usdoj.gov if you would like to reserve a spot now.

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